Trademark Law Update 14 September 2017

Another week another round of trademark stories for you. News includes, Myanmar updating their trademark legislation. Oman ratifies IP laws. Somebody has decided to trademark “Brexit” and Asian American rock band ( from Portland, of course!) the Slants celebrate their Supreme Court win.

Extract:A modern trademark system in Myanmar could be only months away with the draft trademark law currently under review by the Myanmar Parliament.

Myanmar has been working on its first formal trademark law (“the Law”) for many years, as part of a broader process to overhaul the country’s legal framework to facilitate and encourage businesses to invest and expand in Myanmar.

Although there have been many delays in the past, it is expected the Law will come into effect in late 2017 or at the latest by early 2018.

Once implemented, the Law will provide Myanmar with a modern trademark system which adheres to international standards and will bring clarity to the trademark application, registration, maintenance and enforcement processes in Myanmar.

The biggest change from what was proposed in earlier versions of the Law is the lack of a re-registration process from the current system to the new system, along with a strict first-to-file system. Brand owners should therefore be prepared to file all of their important trademarks on the first day the Law comes into effect.

Title:Sultan of Oman issues and ratifies three important IP-related treaties and laws

Extract:Curtis Smolar, an all-round business litigator with expertise in copyright and trademark law, joined Legalist as its general counsel late last month from Palo Alto IP boutique de la Pena & Holiday, becoming the company’s first lawyer. In addition to steering Legalist through regulatory requirements, Smolar will also be helping vet potential investments and assess their value.

Extract: Quick rewind of the facts: The Slants eight years ago tried to trademark the name but were rejected on the basis that you can’t trademark a disparaging term and particularly one that the the U.S. Patent and Trademark Office contended was racially derogatory. The government based its conclusion on a listing in UrbanDictionary.com

But the band argued in various courts over the span of those eight years that the government’s premise was outdated. Slants founder Simon Tam argued that the word was so rarely used as a racial slur that the New Oxford American Dictionary had erased any reference to its use as a racial slur in recent editions.

Extract:The EUIPO Board of Appeal has found that no absolute grounds of refusal hinder the registration of “BREXIT” as a trade mark in Classes 5, 32 and 34. The applicant is UK-based company, Brexit Drinks Ltd, and goods for which registration is sought include, amongst others, food supplements, energy drinks, brewery products and cigarettes.

Extract: This article analyzes trademark rights depending on: (1) whether a user is relying on common-law rights or a federal trademark registration, (2) the effective date on which a user’s rights began, and (3) the geographical scope of the use. Before considering specific examples, two foundational concepts of trademark rights are first discussed: (a) intrastate versus interstate use of a trademark, and (b) the natural zone of expansion.

Title: Planning ahead: preparing for changes to Canadian trademark law

Extract: The most recent estimate for the implementation of amendments to the Trademarks Act (also known as the ‘coming into force’ date) is early 2019. Draft regulations have been published, providing more information on how many of the new provisions will be implemented. The changes will bring opportunities for Canadian and international trademark owners, and it is not too early to plan for them. The following report:

reviews the existing and proposed changes to rules on filing, renewal, opposition and cancellation proceedings;

highlights some transition issues; and

offers tips for trademark strategy now and following the implementation of the amendments.

Extract: IP Australia has released a consultation paper (Paper) concerning proposed amendments to Australia’s system for filing divisional trade mark applications. The Paper proposes amendments which will affect all divisional applications filed in Australia, including allowing divisional applications to be filed for International Registrations Designating Australia (IRDAs) for the first time.

Extract: There are important changes affecting EU trade marks coming into force on 1st October. Members of the MARQUES European Trade Mark Law & Practice Team have been monitoring these changes and providing input on them. Chair Robert Guthrie and Vice-Chair Petra Goldenbaum provide a guide for Class 46 readers:

The MARQUES European Trade Mark Law & Practice Team reviewed the EU Commission’s initial drafts of the Implementing Regulation and the Delegated Regulation and provided comments on the same. Copies of MARQUES’ comments are available on the EU Trade Mark Reform Task Force page of the MARQUES website.

Extract: Our Trademark group, preeminent internationally in strategic trademark counseling and protection, is looking for an experienced paralegal to join its collegial and supportive team. You will be comfortable managing your own docket, be able to work independently, and have well-rounded experience, including domestic and foreign filings, online investigations, SAEGIS scans and D&B reports. You will be very organized and detail oriented and able to thrive in a fast-paced environment.

Extract: Companies are creating their own marijuana strains and protecting them with trademark laws. Profits are taking priority over the rights of patients to access genetically pure medication. A trademark is a visual cue, such as a symbol, phrase, or word that businesses use to identify and distinguish their products from those of their competitors. While this may be a branding advantage, it has consequences.